Intellectual Property – patents — burden of persuasion

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U.S. Supreme Court

Civil

Intellectual Property – patents — burden of persuasion

When a licensee seeks a declaratory judgment against a patentee that its products do not infringe the licensed patent, the patentee bears the burden of persuasion on the issue of infringement.

This conclusion is strongly supported by three settled legal propositions: First, a patentee ordinarily bears the burden of proving infringement, see, e.g., Agawam Co. v. Jordan, 7 Wall. 583, 609; second, the “operation of the Declaratory Judgment Act” is only “procedural,” Aetna Life Ins. Co. v. Haworth, 300 U. S. 227, leaving “substantive rights unchanged,” Beacon Theatres, Inc. v. Westover, 359 U. S. 500; and third, “the burden of proof” is a “ ‘substantive’ aspect of a claim,” Raleigh v. Illinois Dept. of Revenue, 530 U. S. 15–21. Practical considerations lead to the same conclusion. Shifting the burden based on the form of the action could create postlitigation uncertainty about a patent’s scope. It may also create unnecessary complexity by compelling a licensee to prove a negative. Finally, burden shifting is difficult to reconcile with the Declaratory Judgment Act’s purpose of ameliorating the “dilemma” posed by “putting” one challenging a patent’s scope “to the choice between abandoning his rights or risking” suit, MedImmune, Inc. v. Genentech, Inc., 549 U. S. 118. To the extent that the Federal Circuit’s burden shifting rule makes the declaratory judgment procedure disadvantageous, that rule recreates the dilemma that the Declaratory Judgment Act sought to avoid.

695 F.3d 1266, reversed and remanded.

12-1128 Medtronic, Inc., v. Mirowski Family Ventures, LLC

Breyer, J.